MHL Tek, LLC v. Nissan Motor Co. and Nissan North America, Inc., and Hyundai Motor Co.

The scope of a patent assignment determines whether an assignee has the requisite standing to assert patent infringement.

Full Title: MHL Tek, LLC v. Nissan Motor Co. and Nissan North America, Inc., and Hyundai Motor Co., Hyundai Motor America, Hyundai Motor Manufacturing Alabama LLC, Kia Motors Corporation, and Kia Motors America, Inc. and Dr. Ing. H.C.F. Porsche AG, Porsche Cars North America, Inc. and Subaru of America, Inc., and Subaru of Indiana Automotive, Inc. and Audi AG, Volkswagen AG, and Volkswagen Group of America, Inc. (doing business as Audi of America, Inc.) and BMW AG (also known as Bayerische Motoren Werke AG), BMW of North America LLC, and BMW Manufacturing Co. LLC

For full opinion:
2011 U.S.App.LEXIS 16500
2011 WL 3487025

Opinion (Gajarsa): The United States District Court for the Eastern District of Texas dismissed claims of patent infringement by MHL Tek, LLC (“MHL Tek”) against numerous automobile manufacturers for lack of standing. Further, the district court found MHL Tek had standing to assert U.S. Patent No. 5,731,516 (” the ’516 Patent”), however, granted summary judgment of non-infringement of MHL Tek’s ’516 Patent. MHL Tek appealed the district court’s dismissal of its infringement claims and grant of summary judgment of non-infringement. MHL Tek was the assignee of several patents, including the ’516 patent, all related to a tire pressure monitoring system (“TPMS”). In an action for patent infringement, the “party bringing the action has the burden of establishing that is has standing to sue for infringement.” The Court of Appeals for the Federal Circuit found that MHL Tek lacked standing “to assert any of the patents-in-suit,” and reversed the district court’s determination that MHL Tek had standing to assert the ’516 patent, thus vacating the summary judgment of non-infringement. Although the original assignment contained a “carve out” provision, the ’516 patent claimed “‘inventions and discoveries’ set forth in the Parent Application, which were included in the assignment of patent rights. Moreover, “all the limitations of claim 1 of the ’516 patent [were] disclosed in the Parent Application.” AFFIRMED-IN-PART, REVERSED-IN-PART and VACATED-IN-PART.